UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`Case CBM2015-00102
`Patent No. 6,237,095
`
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY’S, AND
`MAXIM INTEGRATED PRODUCTS, INC.’S
`CORRECTED JOINT MOTION TO TERMINATE PROCEEDING WITH
`RESPECT TO
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY
`PURSUANT TO 35 U.S.C. § 327
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`Case CBM2015-00102
`Patent No. 6,237,095
`
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY’S, AND
`MAXIM INTEGRATED PRODUCTS, INC.’S
`CORRECTED JOINT MOTION TO TERMINATE PROCEEDING WITH
`RESPECT TO
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY
`PURSUANT TO 35 U.S.C. § 327
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`Pursuant to 35 U.S.C. § 327(a), Petitioner State Farm Mutual Automobile
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`Insurance Company (“State Farm”) and Patent Owner Maxim Integrated Products,
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`Inc. (“Maxim”) (collectively, “the parties”) jointly request termination of State
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`Farm’s participation in this case, No. CBM2015-00102. Because no additional
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`petitioners remain, the Board may choose to terminate this Covered Business
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`Method (“CBM”) review.
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`I.
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`Brief Explanation as to why Termination is Appropriate
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`
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`State Farm and Maxim have settled their dispute with respect to the patent at
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`issue. Because no final written decision has yet been entered and State Farm and
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`Maxim are jointly making this motion, termination of this CBM review as to State
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`Farm is appropriate, as the Board has not yet “decided the merits of the proceeding.”
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`35 U.S.C. § 327(a).
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` Terminating this CBM review as to State Farm promotes the congressional goal
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`to establish a more efficient and streamlined patent system that, inter alia, limits
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`unnecessary and counterproductive litigation costs. See “Changes to Implement Inter
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`Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
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`for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680
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`(August 14, 2012). Moreover, terminating post-grant proceedings, such as this CBM
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`review, upon settlement fosters an environment that promotes settlements, thereby
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`creating a timely, cost-effective alternative to litigation. A decision to continue the
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`present CBM review as to State Farm would therefore be contrary to the congressional
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`goal of speedy dispute resolution.
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`II.
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`Status of Related Litigation
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`The related District Court litigation between the parties has been settled and the
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`case has been dismissed with prejudice. A copy of the court’s order dismissing the
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`case was previously filed as Exhibit 1027.
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`The parties’ settlement agreement has been made in writing, and a true and
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`correct copy was previously filed as Exhibit 1028 pursuant to 35 U.S.C. § 327(b).
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`Pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c), the parties respectfully
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`request that this Exhibit be treated as business confidential information, which shall be
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`kept separate from the file of the involved patent, and be made available only to
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`federal government agencies on written request or to any other person on a showing of
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`good cause.
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`III. Conclusion
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`Maxim joins the present Motion solely for purposes of terminating State Farm’s
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`participation in this case going forward. For at least these reasons, State Farm and
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`Maxim respectfully request termination of this case as to State Farm.
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`Respectfully submitted,
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`/Truman H. Fenton/
`Truman H. Fenton, Reg. No. 64,766
`SLAYDEN GRUBERT BEARD PLLC
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`/Kenneth J. Weatherwax/
`Kenneth J. Weatherwax, Reg. No. 54,528
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`3
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`CBM2015-00102
`U.S. Patent No. 6,237,095
`Joint Motion to Terminate
`Parham Hendifar, Reg. No. 71,470
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`LOWENSTEIN & WEATHERWAX LLP
`11400 W. Olympic Blvd., Suite 400
`Los Angeles, CA
`90064 (310) 307-4503
`(310) 307-4509 (fax)
`weatherwax@lowensteinweatherwax.com
`
`Counsel for Patent Owner
`Maxim Integrated Products, Inc.
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`
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`401 Congress Ave., Ste. 1900
`Austin, TX 78701
`(512) 402-3572
`tfenton@sgbfirm.com
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`Counsel for Petitioner State Farm
`Mutual Automobile Insurance Company
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`Date: February 2, 2016
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`CBM2015-00102
`U.S. Patent No. 6,237,095
`Joint Motion to Terminate
`PETITIONER’S EXHIBIT LIST
`Description
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`
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`Order of Dismissal With Prejudice, Maxim Integrated
`Prods., Inc. v. State Farm Mutual Automobile Insurance
`Company, Civil Action No. 5:14-cv 01030-XR (W.D. Tex.
`January 19, 2016)
`Covenant Not To Sue between Maxim Integrated Products, Inc.
`and State Farm Mutual Automobile Insurance Company
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`Exhibit
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`Ex.1027
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`Ex.1028
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`CBM2015-00102
`U.S. Patent No. 6,237,095
`Joint Motion to Terminate
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that pursuant to agreement by Petitioner and
`Patent Owner the following documents were served by electronic mail on February
`2, 2016,
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`JOINT MOTION TO TERMINATE PROCEEDING WITH
`RESPECT TO STATE FARM AUTOMOBILE
`INSURANCE COMPANY PURSUANT TO 35 U.S.C.
`§ 327
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`The name and email address of the party being served is as follows:
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`
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`William F. Long
`McKenna Long & Aldridge LLP
`blong@mckennalong.com
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`Kenneth J. Weatherwax
`Registration No. 54,528
`weatherwax@lowensteinweatherwax.com
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`Respectfully submitted,
`/Truman H. Fenton/
`Truman H. Fenton
`Slayden Grubert Beard PLLC
`Attorney for Petitioner State Farm Mutual
`Automobile Insurance Company
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`
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`Date: February 2, 2016
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